Lego Juris A/S v Isaiah Steiner, Lego Dream Cars

WIPO Case No. D2024-5107

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Lego Juris A/S v. ISAIAH STEINER, Lego Dream Cars

Case No. D2024-5107

1. The Parties

The Complainant is Lego Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB,

Sweden.

The Respondent is ISAIAH STEINER, Lego Dream Cars, United States of America.

2. The Domain Name and Registrar

The disputed domain name <legodreamcars.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2024. On December 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Contact Privacy Inc. Customer 0172401823) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 12, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 17, 2024.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2025. The Respondent sent an email communication to the Center on December 21, 2024.

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On December 24, 2024, following the Respondent’s communication, the Center sent a Possible Settlement email to the Parties to which the Complainant responded on December 27, 2024, requesting suspension of the proceeding to explore settlement options. The Center suspended the proceedings from December 30, 2024, to January 29, 2025. On January 21, 2025, the Complainant sent an email to the Center informing

that they had not heard back from the Respondent.

The Center reinstituted the proceeding on February 3, 2025, and informed the Parties that the new Response due date was February 11, 2025. Pursuant to paragraph 6 of the Rules, on February 12, 2025, the Center informed the Parties that it would proceed with the panel appointment process and no Response was filed.

The Center appointed Dawn Osborne as the sole panelist in this matter on February 18, 2025. The Panel
finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration
of Impartiality and Independence, as required by the Center to ensure compliance with the Rules,

paragraph 7.

4. Factual Background

The Complainant, a renowned toy company, is the owner of the trademark LEGO registered, inter alia, as trademark number 1018875 in the USA for toys since August 26, 1975. The Complainant offers branded construction toys, among them a “dream car generator” where customers can build their own LEGO car, and

other LEGO branded products.

The disputed domain name registered on September 11, 2024, has been used to redirect to a website offering competing toy products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

The disputed domain name is confusingly similar to the Complainant’s well known LEGO mark, wholly incorporating it and adding only the generic term “dream cars” and the gTLD .com neither of which distinguishes the disputed domain name from the Complainant’s mark.

Respondent is not commonly known by the disputed domain name (there being no corroboration in evidence
for the use of LEGO dream cars falsely in the WhoIs details) and the Respondent has no permission from
the Complainant to use the Complainant’s mark. The disputed domain name has been used in a confusing
manner for competing toys which is not a bona fide offering of goods and services or a noncommercial
legitimate fair use. The Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent directed the disputed domain name to a site offering competing products to confuse disrupt the Complainant’s business. The choice of name to offer competing products shows the Respondent was aware of the Complainant and its business. The disputed domain name has been registered and used in bad faith.

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B. Respondent

The Respondent did not provide a substantive Response to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing
(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison
between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here “dream cars” may bear on assessment of the second and third elements, the Panel finds the addition of such a term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized
that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task
of “proving a negative”, requiring information that is often primarily within the knowledge or control of the
respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,
section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Respondent is not authorised by the Complainant. While the disclosed information for the Respondent includes the reported organization “Lego Dream Cars”, such information clearly seeks to falsely imply association with the Complainant and legitimize the registration of the disputed domain name as if in connection with such fraudulently adopted organization name.

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Panels have held that the use of a domain name for illegitimate activity here, impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The use by the Respondent for competing toys is confusing commercial usage and, therefore is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent has used the disputed domain name to offer competing products to the Complainant thereby disrupting the business of a competitor and intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have held that the use of a domain name for illegitimate activity here impersonation/passing off
constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the

Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <legodreamcars.com> be transferred to the Complainant.

/Dawn Osborne/
Dawn Osborne
Sole Panelist
Date: February 25, 2025